Today the Oberlandesgericht Karlsruhe (Karlsruhe Higher Regional Court) provided me, for a small fee, a digital and anonymized copy of the order to stay enforcement. While the order became known only on Monday, it actually came down last Thursday. It states that security to the amount of 100 million euros ($132 million) is required to prevent further enforcement of the injunction (further below you can see it's twice 50 million euros for technically two injunctions), an amount that is disproportionately high considering how blindingly obvious the invalidity of this patent is. Apple can post a bond or make a deposit with a lower court. The full text of the order furthermore indicates that Google's (Motorola's) trolling wasn't limited to its enforcement of the erroneously-granted injunction but also involved other ways to hassle Apple, including three contempt motions, further to one of which the Mannheim court actually imposed a contempt fine on Apple. All that over a patent that shouldn't have been granted in the first place.

Furthermore, the order makes reference to the Bundespatentgericht's (Federal Patent Court of Germany) preliminary assessment of July 9, 2013, that Motorola's push patent is invalid due to at least two (!) prior art references, PCMAIL and IMAP, either one of which rendered the patent invalid all by itself. A court in London had even identified four independent invalidity theories, including these two. The Federal Patent Court of Germany doesn't necessarily disagree with the other two theories, but after this patent was, on a formally preliminary but practically irreversible basis, found twice dead it was already way past the point at which it would have had to reach any additional contentions.

What makes this all the more embarrassing for Google is that it actually implements the IMAP protocol and positions itself as a supporter of open and royalty-free Internet standards.

The enforcement of the decision by the Mannheim Regional Court dated February 3, 2012 (case no. 7 O 229/11) is provisionally stayed with respect to item I.1a (injunctive relief) against security of EUR 50,000,000.00, item I.1b (injunctive relief) against security of EUR 50,000,000.00, and item I.2 (accounting) against security of EUR 50,000.00.

Defendant-Appellant's motion is otherwise denied.

Rationale:

Since May 26, 2011, Plaintiff-Appellee has been the registered owner of European Patent [REDACTED; this is EP0847654 on a "multiple pager status synchronization system and method"] (Exh. KP2-K1; Transl. Exh. NK 2; hereinafter referred to as the Patent-in-Suit]. The contracting states named in the patent include Germany. The application was published on June 17, 1998; the notice of grant of the Patent-in-Suit was published on February 20, 2002. A. R. Germany GmbH [this anonymizing abbreviation stands for Apple Retail Germany GmbH, the operator of the official German Apple Stores] (cf. Bundles of Exhibits B2 and B5) and certain corporate entities of the Microsoft group (hereinafter referred to as Microsoft) have lodged nullity complaints against the Patent-in-Suit with the Federal Patent Court of Germany. Further an order (Exh. BK 8) dated September 20, 2012, these proceedings were consolidated into a single case for joint trial and adjudication. The consolidated proceeding [before the Federal Patent Court] now has case no. 1 Ni 3/13 (EP) (cf. Exh. BK 9).

Plaintiff-Appellee has based its complaint, whose prayers for relief include requests for damages-related disclosures, accounting and declaration of an entitlement to damages, on claim 1 of the Patent-in-Suit. The claim-in-suit reads as follows in English (the prosecution language) and in the German translation of the patent document:

transmitting (200) by a wireless messaging infrastructure a first message (205) having a first status; in one transceiver (130) of the plurality of transceivers, changing (220) the first status of the first message to a second status responsive to an input to the one transceiver, and transmitting (235) a second message (240) indicative of the second status; in the wireless messaging infrastructure (110), receiving (245) the second message; and

characterized in that the method includes the steps of in the wireless messaging infrastructure, responsive to receiving the second message, transmitting (250) a third message (255) indicative of the second status; and

in at least one other transceiver (150) of the plurality of transceivers, receiving (265) the third message, and responsive to receiving the third message, changing (275) the first status of the first message to the second status."

[German claim language omitted in this translation; you can find it in the patent document]

The [Mannheim] Regional Court adjudged Defendant-Appellant at Plaintiff-Appellee's request, among other things, to cease and desist [from further infringement] and to make damages-related disclosures and provide an accounting. Defendant-Appellant appealed that ruling.

Per an order dated September 10, 2012 (case no. 7 O 229/11 ZV [ZV = Zwangsvollstreckungsverfahren = enforcement proceeding] I), the Regional Court imposed on Defendant-Appellant, for culpable contempt of the injunction ordered under item I.1b of its ruling, a fine of EUR 100,000.00 and, in the event that this fine could not be collected, one day of alternative confinement of Defendant-Appellant's director for each amount of EUR 10,000.00 not collected. Defendant-Appellant immediately appealed this order; this Court has not yet adjudicated the appeal (case no. 6 W 79/12). Through a filing (Exh. BK 19) dated October 9, 2012, Plaintiff-Appellee filed with the Regional Court a second contempt motion in accordance with § 890 ZPO (German Code of Civil Procedure) alleging violation of the injunction ordered under item I.1b of the Regional Court's ruling. On March 6, 2013, Plaintiff-Appellee filed with the Regional Court a motion to order contempt fines against Defendant-Appellant in accordance with § 888 ZPO in order to enforce the accounting owed under the Regional Court's ruling.

In an order dated April 22, 2013, this Court, with the consent of the parties [which -- and the order doesn't mention this but I will -- Google's counsel originally withheld], stayed the appellate proceedings pending adjudication by the Federal Patent Court of the nullity complaint targeting the Patent-in-Suit.

In a notice dated July 9, 2013 (Exh. BK 23), the Federal Patent Court communicated in the form of an early indication pursuant to § 83 PatG [German Patent Act] its preliminary opinion that either of the prior art references "PCMAIL: A Distributed Mail System for Personal Computers" of June 1998 (Exh. NK 5, hereinafter referred to as PCMAIL) and the print publication Request for Comments No. 1730 of December 1994 entitled Internet Message Access Protocol -- Version 4 (Exh. NK 7, Transl. Exh. K 7a; hereinafter referred to as IMAP4), each on its own, substantially anticipated all claim limitations -- with the exception of the [disclosed] wireless messaging infrastructure -- of claims 1, 3 and 7 of the Patent-in-Suit (Exh. BK 23, p. 7). The partial claim limitation of providing a wireless messaging infrastructure, which is not [explicitly] disclosed in NK 5 and NK 7, was held to be a routine measure of a person skilled in the art in connection with portable and battery-powered receivers, which does not require inventive activity (Exh. BK 23, p. 8). The Federal Patent Court has scheduled its [nullity] hearing for November 13, 2013.

Defendant-Appellant argues that continued enforcement is no longer justified because the Regional Court's ruling would be reversed at least due to the invalidity of the Patent-in-Suit, as shown by the Federal Patent Court's preliminary opinion and a decision by the UK Court of Justice (Exh. BK 7). Defendant-Appellant argues that, in light of the foregoing, its interest in a cessation of enforcement outweighs Plaintiff-Appellee's interest in continued enforcement.

Defendant-Appellee requested the following relief:

A provisional stay of the enforcement of February 3, 2012 ruling by the Mannheim Regional Court (case no. 7 O 229/11) (in the alternative, a stay against security to be provided by Defendant-Appellant) pending adjudication of the (in)validity of the Patent-in-Suit.

Plaintiff-Appellee opposes these requests. Plaintiff-Appellee argues that the notice by the Federal Patent Court suggests that the Patent-in-Suit would be upheld at the end of the nullity hearing in a form that would still support the finding of infringement made in this case with respect to all of the accused technologies.

[According to Plaintiff-Appellee] the Federal Patent Court's claim construction, under which even a "pull"-type synchronization falls within the scope of the claim, is incorrect because the Federal Patent Court [allegedly] fails to ascribe any meaning whatsoever to the claim term "responsive to". Ultimately, [Plaintiff-Appellee argues], the construction of granted claim 1 is not outcome-determinative because a synchronization initiated by the [messaging] infrastructure could [allegedly] be claimed in amendments and because the related amendments have [allegedly] already been at issue in this infringement proceeding. NK5 [allegedly] does not suggest a synchronization initiated by the infrastructure.

II.

The Motion is admissible and granted-in-part. If a provisionally-enforceable ruling is appealed, the appeals court may, in accordance with §§ 719, 707 ZPO, grant a motion for a stay of enforcement with or without [a requirement to provide] security.

In the present case, a stay of enforcement without security is not an option because Defendant-Appellant has not shown that it is unable to provide such security (§ 707 para. 1 sentence 1 ZPO in conjunction with § 719 ZPO).

In connection with the exercise of its discretion under §§ 719 para. 1 sentence 1, 707 para. 1 sentence 1 ZPO, the Court has to balance the conflicting interests of the creditor [of the injunction, i.e., the patentee] and the debtor [of the injunction, i.e., the alleged infringer]. In its decision-making the Court has to observe the legislature's value judgment that, in general, the interests of the creditor [right holder] are prevalent. The provision of § 709 Sentence 1 ZPO indicates that the debtor [alleged infringer] typically enjoys sufficient protection thanks to the fact the creditor has to give security prior to [provisional] enforcement. It is, therefore, consistent with established precedent that in cases (such as this one) in which the appealed ruling can only be enforced against security provided by the creditor, a stay of enforcement can only be considered in exceptional cases under extraordinary circumstances (Düsseldorf Higher Regional Court, InstGE 9, 173 Rn.2 mwN.; this Senate's decision of April 18, 2011 - case no. 6 U 29/11, Rn. 4, citation according to juris). What adds to this general thinking in the field of patent law is the special circumstance that the term of validity of a patent and the concomitant entitlement to injunctive relief is temporally-limited, which at least in the event of a near-term expiration of the asserted intellectual property right means that any postponement of enforcement could completely vitiate the entitlement to injunctive relief (Federal Court of Justice, GRUR 2000, 862, 863 - Spannvorrichtung; Düsseldorf Higher Regional Court, InstGE 9, 173 marginal 2). The cessation of enforcement is, therefore, justified only if it can be established at the time of adjudication of a motion to stay through the summary determination required under §§ 719, 707 ZPO that the appealed judgment is clearly erroneous or if a finding of invalidity of the Patent-in-suit is highly probable (this Senate's previously-cited decision, marginal 7) or if the debtor can substantiate and show a danger of extraordinary damage that goes beyond the ordinary effects of enforcement (Düsseldorf Higher Regional Court, Mitt. 1997, 256, 257 - Steinknacker; InstGE 9, 173 marginal 2 mwN.; this Senate's previously-cited ruling).

(a) In this Court's opinion there is a high probability that the claim on which the complaint is based, claim 1 of the Patent-in-Suit, will not be upheld in the nullity proceeding.

(1) The claimed invention relates to the field of two-way communication devices. In light of the growing acceptance of selective calling devices or pagers, in particular two-way pagers, and for an improved battery life, the patent document describes that certain users utilized multiple pagers with the same calling address. When all of these pagers are switched on, this poses the problem that state changes of messages resulting from user actions on the presently-used pager were not made on the other pagers. When a message was read, deleted or blocked on one pager, it would remain marked as unread on the other pagers. After changing one's pager, the user would have to re-read the message and modify its state again. With the method according to claim 1 of the Patent-in-Suit, state changes of messages made on one pager owned by a given user would automatically be made on all of the user's other pagers. This would, as per claim 1, be achieved through a method that can be structured as follows:

1.1 A method of synchronizing message information (208) among a plurality of transceivers (130, 150) comprising the steps of:

1.2 transmitting (200) by a wireless messaging infrastructure a first message (205) having a first status; in one transceiver (130) of the plurality of transceivers,

1.3 changing (220) the first status of the first message to a second status responsive to an input to the one transceiver, and

1.4 transmitting (235) [from the one transceiver (130)] a second message (240) indicative of the second status;

1.5 in the wireless messaging infrastructure (110), receiving (245) the second message; and

characterized in that the method includes the steps of in the wireless messaging infrastructure:

1.6 a) responsive to receiving the second message,

b) transmitting (250) a third message (255) indicative of the second status; and

1.7 in at least one other transceiver (150) of the plurality of transceivers, receiving (265) the third message, and

1.8 [in the at leastone other receiver (150)] responsive to receiving the third message, changing (275) the first status of the first message to the second status.

(2) In this Court's opinion it is highly probable that claim 1 of the Patent-in-Suit will not survive the nullity proceeding, at least not without amendments. This follows in particular from the Federal Patent Court's notice, according to which the prior art reference "PCMAIL: A Distributed Mail Sytem for Personal Computers" of June 1998 (Exh. NK 5, hereinafter referred to as PCMAIL) and the print publication Request for Comments Nr. 1730 of December 1994 entitled "Internet Message Access Protocol -- Version 4" (Exh. NK 7, Transl. Exh. K 7a, hereinafter referred to as IMAP4) -- either one considered on its own -- substantially anticipated all claim limitations -- with the exception of the wireless messaging infrastructure -- of claims 1, 3 and 7 of the Patent-in-Suit (Exh. BK 23, p. 7). The partial claim limitation of a provision of a wireless infrastructure, while not [explicitly] disclosed in NK 5 and NK 7, is deemed a standard measure of person skilled in the art in connection with portable and battery-powered receivers that does not require inventive activity (Exh. BK 23, p. 8). This Court has no reason to doubt the accuracy of this preliminary assessment.

Unlike the previously-stated positions of the parties and also the opinion of this Court, the Federal Patent Court bases its reasoning on the holding that the meaning of claim limitation 1.6 encompasses not only the so-called push functionality (server-initiated synchronization) but also the so-called pull method. Pull-type synchronization is initiated either by user or, periodically, by the device (so-called fetch mode). In the rationale part of its notice, the Federal Patent Court explains the following:

"The adjective 'automatic' is not found in the language of claim 1. The Court also doubts that a person skilled in the art is implicitly disclosed an automatic push synchronization by partial claim limitation 1.6a in the sense that the transmissions occurs due to the receipt of the second message or "responsive to receiving" it. Claim 1 covers a method that involves the stated steps. Therefore, all methods encompassing these steps as well as other steps also fall within its scope."

This Court has no reason to doubt the expert assessment [by the Federal Patent Court, which has three technically-trained judges on each nullity panel]. In particular, the Federal Patent Court has accurately applied the principle that the steps disclosed in a method patent claim are generally not considered to be exclusive and that further steps are consequently not excluded (cf. Federal court of Justice, ruling of June 21, 2011 - X ZR 121/11, BeckRS 2013, 05208 marginal 16). Plaintiff-Appellee unavailingly contradicts the Federal Patent Court's assessment, arguing that this claim construction would not ascribe any limiting effect whatsoever to the claim term "responsive to", because it is a mere fact that the second message must be received before the third one is sent. [This Court disagrees with Plaintiff-Appellee] because the claim term "responsive to" already has such a broad meaning that a narrowing of its scope would require a corresponding understanding on the part of a person skilled in the art (cf. with respect to the broad meaning of the term "in response": Federal Court of Justice, ruling of June 21, 2011 - X ZR 121/11, BeckRS 2013, 05208 marginal 16). The Federal Patent Court, with technical experts serving on the panel, has determined that no such narrowing is warranted, pointing to the fact that the chosen claim language "responsive to" or "in response to" is not capable of making a distinction between push-based and polling-based synchronization methods (Exh. BK 23 p. 7).

Given that, under the claim construction applied by the Federal Patent Court, all claim limitations of claim 1 of the Patent-in-Suit -- with the exception of the wireless infrastructure -- have been anticipated by NK 5 and NK 7 [each on its own], there is a high probability that the Federal Patent Court will deny the patentability [of the claimed invention]. This Court shares the Federal Patent Court's opinion that the partial claim limitation of providing a wireless infrastructure, while not [explicitly] disclosed by NK 5 and NK 7, does not require inventive activity on the part of the person skilled int the art addressed [by the Patent-in-Suit].

This court also rejects Plaintiff-Appellee's argument that it would, on a timely basis, propose amendments that mirror the requirement of an infrastructure-initiated synchronization.

(a) Given that the Regional Court ruled against Defendant-Appellant based on the granted and examined patent claims, the Regional Court's ruling would be overbroad in connection with the amended claims.

(b) Apart from the foregoing, the Federal Patent Court's preliminary assessment contains the expert opinion that a person skilled in the art would have considered automatic synchronization already in connection with NK 5 (Exh. BK 23 p. 8). Plaintiff-Appellee argues that the related quote in the Federal Patent Court's notice does not indicate that an infrastructure-initiated updating of states was addressed. While it is accurate that this cannot be directly read in the quoted passage, the Federal Patent court has apparently developed an understanding, from the perspective of a person skilled in the art, based on the overall meaning of NK 5 ("when reading NK 5").

3. The motion must be denied with respect to the request to vacate the contempt sanction ordered by the Mannheim Regional Courton September 10, 2012 (case no. 7 O 229/11 ZV I). § 719 para. 1 sentence 1 ZPO in conjunction with § 707 sentence 1, last alt. ZPO provides for a vacatur of a contempt sanction against provision of security, but does not require a vacatur of an order according to § 707 sentence 1, last alt. ZPO. The immediately-filed appeal of the order imposing a contempt fine has the effect of a stay (§ 570 para. 1 ZPO; Federal Court of Justice, GRUR 2012, 427, marginal 8). With the cessation of enforcement and proof of provision of security, which serve as an additional defense in the further proceeding (§ 571 para. 2 sentence 1 ZPO), the order has been rendered unenforceable for as long as this Court does not affirm or reverse the Regional Court's decision (cf. Federal Court of Justice, decision of February 27, 2004, IXa ZB 252/03, BGHReport 2004, 987 marginal 12; this Court's ruling, OLGR 2007, 358, 359 - citation according to juris). After Defendant-Appellant gives security, Plaintiff-Appellee will in accordance with § 775 No. 2 ZPO no longer be allowed to pursue the contempt proceedings it instigated (cf. Federal Court of Justice, citation as above, Stein/Jonas/Münzberg, ZPO, 22nd edition § 719 marginal 27 and § 775 marginal 27; Herget in Zöller, ZPO, 29th edition, § 707 marginal 20). On a precautionary basis this Court notes that this does not mean that the motion to impose a fine would have to be rejected as inadmissible after security is given (apparently unlike Fedreal Court of Justice, BGHReport 2004, 987 marginal 12). Since a violation of an order committed prior to a stay of enforcement can again be pursued after vacatur or loss of effect of the stay, meaning that enforcement may be continued (Frankfurt Higher Regional Court, NJW-RR 1990, 124; this Court, OLGR 2007, 385, 359; Stöber in Zöller, as cited above § 890 marginal 9), the effect of the stay of enforcement on the enforcement proceedings in accordance with § 890 ZPO is merely that the enforcement proceeings are "frozen" in their current state and effectively stayed (Cologne Higher Regional Court, OLGR 1994, 139 marginal 4, citation according to juris; Stöber in Zöller, ZPO, 29th edition, § 776 marginal 1).

Schmukle, Presiding Circuit Judge

Prof. Dr. Singer, Circuit Judge

Dr. Rombach, Circuit Judge

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About Me

Florian Mueller is an app developer who used to be an award-winning intellectual property activist. His 30 years of software industry expertise span different market segments (games, education, productivity and infrastructure software), diverse business models, and technical and commercial areas of responsibility. In recent years, Florian advised a diversity of clients on the patent wars surrounding mobile devices, and on their economic and technical implications. (In order to avoid conflicts of interest, Florian does not hold or initiate transactions in any technology stocks or derivatives thereof, except that he is long AAPL.) He is now developing games for smartphones and tablet computers.